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EXHIBIT 10.21
NONEXCLUSIVE PATENT LICENSE AGREEMENT
This Nonexclusive Patent License Agreement is made and effective as of February
11, 2000 (the "Effective Date"), by and between 3-Dimensional Pharmaceuticals,
Inc., a corporation having its principal place of business at Eagleview
Corporate Center, 665 Stockton Drive, Suite 104, Exton, PA 19341 ("3DP"), and
DuPont Pharmaceuticals Company (a wholly-owned subsidiary of E. I. DuPont de
Nemours & Co. ("DuPont")) having its principal place of business at Centre Road,
Chestnut Run Plaza, Building 721, Wilmington DE 19880 ("DPC"). 3DP and DPC may
be referred to herein as a "Party" or, collectively, as the "Parties".
WHEREAS, 3DP has developed and patented certain DirectedDiversity(R) technology
for generating chemical compounds having desired biological, chemical and other
properties;
WHEREAS, DPC is engaged in research and development of biologically active
compounds for the treatment of human disease;
WHEREAS, DPC wishes to license certain patent rights from 3DP on a nonexclusive
basis;
WHEREAS, the parties desire to enter into this Agreement to set forth the
licensing terms for such rights;
NOW, THEREFORE, in consideration of the various promises and undertakings set
forth herein, and intending to be legally bound, the Parties agree as follows:
Article 1 DEFINITIONS
The terms in this Agreement with initial letters capitalized, whether used in
the singular or the plural, shall have the meaning set forth below or, if not
listed below, the meaning designated in places throughout this Agreement.
1.1 "Affiliate" means any corporation or other business entity which
controls, is controlled by, or is under common control with 3DP or
DPC. A corporation or other entity shall be regarded as in control of
another corporation or entity if it owns or directly or indirectly
controls at least 50% of the voting stock or other ownership interest
of the other corporation or entity (or alternatively, if it owns the
maximum such ownership interest permitted by law), or if it possesses,
directly or indirectly, the power to direct or cause the direction of
the management and policies of the corporation or other entity or the
power to elect or appoint at least 50% of the members of the governing
body of the corporation or other entity.
1.2 "Agreement" means the present agreement including its Appendices.
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1.3 "Confidential Information" means all information that has or could
have commercial value or other utility in a Party's business, or the
unauthorized disclosure of which could be detrimental to the Party's
interests, including confidential information, inventions, know-how,
data and materials relating to the Licensed Patents, and shall include
without limitation research, technical, clinical development,
manufacturing, marketing, financial, personnel and other business
information and plans, whether in oral, written, graphic or electronic
form.
1.4 "DPC" means DuPont Pharmaceuticals Company as identified above.
1.5 "DPC Site" means a Site which is a DPC Site or a Site of a DPC
Affiliate which is involved in pharmaceutical (including diagnostic
imaging) research and development.
1.6 "DuPont" means E. I. DuPont de Nemours & Co. as identified above.
1.7 "Effective Date" means the effective date of this Agreement as set
forth above.
1.8 "Field" means the research and development of chemical materials for
use in pharmaceutical and diagnostic products. With respect to the
Other DuPont Site described in Section 3.3, the Parties shall agree to
the applicable definition of Field.
1.9 "Improvements" means any inventions, discoveries, improvements or
enhancements, whether or not patented or patentable, relating to the
subject matter claimed in the Licensed Patents.
1.10 "Licensed Patents" means all U.S. and foreign patent applications or
issued patents identified in Appendix A, and any U.S. and foreign
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patent applications or issued patents claiming Improvements made by
3DP in respect thereof, including any provisionals, divisionals,
continuations, continuations-in-part, reissues and extensions derived
therefrom, such as patent term restorations, supplementary protection
certificates, etc., to the foregoing that may be filed by or granted
to 3DP during the term of this Agreement.
1.11 "Other DuPont Site" means a Site which is a DuPont Site or a Site of a
DuPont Affiliate which is not a DPC Site and is not involved in
pharmaceutical (including diagnostic imaging) research and
development.
1.12 "Site" means a discrete research facility, for example, a building or
building complex at which DPC or an Affiliate of DPC conducts internal
research and development activities, in a geographic location distinct
from other research facilities of DPC or an Affiliate of DPC.
1.13 "Site License Fee" shall have the meaning set forth in Section 3.2
below.
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1.14 "Third Party" means an individual, corporation or other entity other
than the Parties and their Affiliates.
1.15 "3DP" means 3-Dimensional Pharmaceuticals, Inc. as identified above.
Article 2 GRANT OF LICENSE
2.1 Nonexclusive Patent License. 3DP hereby grants DPC (and its
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Affiliates, but only to the extent specifically permitted herein) a
nonexclusive license, without any right to sublicense, under the
Licensed Patents in the Field but only in Direct Support of DPC's (or
its Affiliate's as permitted herein) internal and collaborative
research and development activities. As used herein, "Direct Support"
means that DPC (or its Affiliates as permitted herein) may operate
under the Licensed Patents to identify compounds with activity against
targets that have been selected through DPC's (or its Affiliate's as
permitted herein) internal research and development programs or to
identify compounds for which DPC (or its Affiliates as permitted
herein) will pay for a share of the development costs or receives at
least a 10% royalty (or equivalent revenue share) or has any rights of
commercialization. In accordance with the foregoing, it is
acknowledged and understood that DPC and its Affiliates are not
permitted under the license granted herein to compete with 3DP by
providing combinatorial chemistry services to third parties on a fee-
for-service basis.
The rights granted hereunder may be extended by DPC to one (1) Other
DuPont Site, provided that in such event DuPont or its Affiliate shall
be bound in the same way as DPC with respect to all the terms and
conditions of this Agreement. In such event DuPont (or its Affiliate
as permitted herein) shall have a nonexclusive license, without any
right to sublicense, under the Licensed Patents in the Field but only
in Direct Support of DuPont's (or its Affiliate's as permitted herein)
internal and collaborative research and development activities. As
used in this paragraph, "Direct Support" means that DuPont (or its
Affiliate as permitted herein) may operate under the Licensed Patents
to identify compounds with activity against targets that have been
selected through DuPont's (or its Affiliate's as permitted herein)
internal research and development programs or to identify compounds
for which DuPont (or its Affiliate as permitted herein) will pay for a
share of the development costs or receives at least a 10% royalty (or
equivalent revenue share) or has any rights of commercialization.
2.2 Limitations on License Grant. Except as permitted under Section 2.1,
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DPC (and any of its Affiliates, to the extent permitted below) may not
operate under the Licensed Patents on behalf of any Third Parties such
as, for example, in connection with providing research or development
services to any Third Party on a contractual basis. The foregoing
license
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grant is further limited to on-site activities at one or more actual
DPC Sites, and does not include or permit off-site or remote access
through the internet or otherwise. In addition, the foregoing license
does not permit activities by DPC or DuPont or their Affiliates under
this Agreement that are covered by that certain Collaborative Research
and License Agreement, effective on October 12, 1998, between 3DP and
E. I. DuPont de Nemours & Co.
2.3 Term and Renewal. The initial term of this Agreement shall expire on
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April 1, 2000. However, this Agreement may be renewed by DPC on an
annual basis by payment of the Site License Fees as set forth in
Section 3.2.
2.4 Non-Assertion. During the term of this Agreement and so long as DPC
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has not committed any material breach with respect to any obligation
hereunder, 3DP will not assert any patent or patent application
against DPC to prevent DPC from practicing the rights granted to DPC
under Article 2 hereof.
Article 3 FINANCIAL TERMS
3.1 License Fee. In consideration of the grant of rights under Article 2
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of this Agreement, DPC agrees to pay an initial nonrefundable license
fee of [**] within thirty (30) days of the Effective Date of this
Agreement. This initial license fee shall be creditable against the
first annual Site License Fee payable in accordance with Section 3.2.
3.2 Individual Site License Fees. [**]
3.3 Location of DPC Sites. The location(s) of the DPC Site(s) may include
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the Wilmington Experimental Station, to the extent that DPC conducts
research and development activities there, and other DPC Sites to be
determined at DPC's sole discretion. Notwithstanding the foregoing,
DPC may permit one (1) Other DuPont Site to operate under the Licensed
Patents subject to the approval of 3DP, such approval not to be
unreasonably withheld. Once approved, DPC may not transfer the license
to another Other DuPont Site without the approval of 3DP, such
approval not to be unreasonably withheld. Any such Other DuPont Site
shall be considered to be a DPC Site for the purpose of determining
License Fees, and operations under the Licensed Patents at any such
Site shall be subject to all of the other terms and conditions of this
Agreement.
3.4 Mode of Payment. All license payments to 3DP hereunder shall be made
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by wire transfer of United States Dollars in the requisite amount to
such bank account as 3DP may designate by notice to DPC. Payments
shall be free and clear of any taxes, fees or charges, to the extent
applicable.
**Certain portions of this Exhibit have been omitted based upon a request for
confidential treatment that has been filed with the Commission. The omitted
portions have been filed separately with the Commission.
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3.5 Most Favored Licensee Provision. [**]
Upon the written request of DPC and not more than once in each
calendar year, 3DP shall permit an independent certified public
accounting firm of nationally recognized standing selected by DPC and
acceptable to 3DP (which acceptance by 3DP shall not be unreasonably
withheld), at DPC's expense, to have access during normal business
hours to such records of 3DP as may be reasonably necessary to verify
3DP's compliance with the provisions of this Section 3.5. The
accounting firm shall enter into an acceptable and customary
confidentiality agreement with 3DP obligating the accounting firm to
retain in confidence all information of 3DP which it obtains in
performing such audits hereunder, and such audit shall be subject to
3DP's third party confidentiality obligations. Such accounting firm
shall report to DPC and 3DP whether or not 3DP is in compliance with
this Section 3.5. If 3DP is not in compliance with this Section 3.5,
such accounting firm shall disclose the financial terms of the Third
Party license which contains more favorable financial terms than those
applicable to DPC hereunder. In no event shall such accounting firm
disclose the identity of the Third Party with whom 3DP has entered
into a license.
3.6 [**]
**Certain portions of this Exhibit have been ommitted based upon a request for
confidential treatment that has been filed with the Commission. The omitted
portions have been filed separately with the Commission.
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[**]
Article 4 OBLIGATIONS OF DPC
4.1 Annual Reports. DPC shall provide 3DP with written annual reports
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within sixty (60) days after the end of each calendar year during the
term of this Agreement to identify the DPC (or Affiliate's) Sites that
are operating under the Licensed Patents.
Article 5 CONFIDENTIALITY
5.1 Confidentiality Obligations. The Parties agree that, for the term of
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this Agreement and for ten (10) years thereafter, either Party that
receives Confidential Information (a "Receiving Party") from the other
Party (a "Disclosing Party") shall keep completely confidential and
shall not publish or otherwise disclose and shall not use for any
purpose (except as expressly permitted hereunder) any Confidential
Information furnished to it by the "Disclosing Party" pursuant to this
Agreement (including without limitation, know-how), except to the
extent that it can be established by the Receiving Party that such
Confidential Information:
(a) was already known to the Receiving Party, other than under an
obligation of confidentiality from the Disclosing Party;
(b) was generally available to the public or otherwise part of the
public domain at the time of its disclosure to the Receiving
Party;
(c) became generally available to the public or otherwise part of the
public domain after its disclosure and other than through any act
or omission of the Receiving Party in breach of this Agreement;
(d) was subsequently lawfully disclosed to the Receiving Party by a
Third Party;
(e) can be shown by written records to have been independently
developed by the Receiving Party without reference to the
Confidential Information received from the Disclosing Party and
without breach of any of the provisions of this Agreement; or
**Certain portions of this Exhibit have been omitted based upon a request for
confidential treatment that has been filed with the Commission. The omitted
portions have been filed separately with the Commission.
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(f) the disclosing party has specifically agreed in writing that the
receiving party may disclose.
The obligations of confidentiality and non-use set forth in this
Section 6.1 shall also apply to biological material and chemical
compounds and associated information (including without limitation
know-how) disclosed by one Party to the other prior to or during the
term of this Agreement; provided however, that such obligation of
confidentiality and non-use shall not apply with respect to compounds
which are assigned to DPC or exclusively licensed to DPC by 3DP.
5.2 Written Assurances and Permitted Uses of Confidential Information.
(a) The Receiving Party may disclose Confidential Information to the
extent the Receiving Party is compelled to disclose such
information by a court or other tribunal of competent
jurisdiction, provided however, that in such case the Receiving
Party shall immediately give notice to the Disclosing Party so
that the Disclosing Party may seek a protective order or other
remedy from said court or tribunal. In any event, the Receiving
Party shall disclose only that portion of the Confidential
Information that, in the opinion of its legal counsel, is legally
required to be disclosed and will exercise reasonable efforts to
ensure that any such information so disclosed will be accorded
confidential treatment by said court or tribunal.
(b) To the extent it is reasonably necessary or appropriate to
fulfill its obligations and exercising its rights under this
Agreement, the Parties may disclose Confidential Information to
their Affiliates on a need-to-know basis on condition that such
Affiliates agree to keep the Confidential Information
confidential for the same time periods and to the same "extent as
the Party is required to keep the Confidential Information
confidential under this Agreement.
(c) The existence and the terms and conditions of this Agreement
which the Parties have not specifically agreed to disclose
pursuant to this Section 5.2 shall be treated by each Party as
Confidential Information of the other Party.
(d) If a Party is required to make any disclosure of the other
Party's Confidential Information, it will give at least thirty
(30) days written, advance notice to the latter Party of such
disclosure requirement. If a Party is required to disclose
Confidential Information to comply with applicable laws or
governmental regulations, including but not limited to submitting
information to tax authorities or to comply with any discovery or
similar request for production of documents in litigation or
similar alternative
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dispute resolution proceedings, such party may make such
disclosure provided it gives prompt notice to the other Party,
and provided it makes all reasonable efforts to comply with all
administrative or other procedures or to establish a reasonable
protective or similar order under which the confidential nature
of the information will be maintained.
5.3 Permitted Disclosures for Business Development Purposes.
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Notwithstanding the foregoing, or any other provision in this
Agreement to the contrary, 3DP may describe the financial terms of
this Agreement in confidence, in connection with capital raising or
financing activities, provided however, that any such recipient of
such disclosure shall agree in writing to keep such terms confidential
for the same time periods and to the same extent as 3DP is required to
keep Confidential Information confidential under this Agreement.
Furthermore, DPC acknowledges that 3DP may be obligated to disclose
terms of this Agreement and make public a copy of this Agreement in
the event it becomes a public company as required by applicable U.S.
law; provided however, that the terms and copy of this Agreement shall
be redacted such that the extent of any such disclosure shall be
limited to that which in the opinion of 3DP's legal counsel is legally
required to be disclosed.
Article 6 PATENTS AND INFRINGEMENT
6.1 Licensed Patents. 3DP shall prepare, file, prosecute and maintain the
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Licensed Patents at 3DP's expense and in a manner deemed appropriate
in 3DP's sole judgment. 3DP agrees to keep DPC fully advised of the
status of all Licensed Patents, upon reasonable written request from
DPC.
6.2 Infringement of the Licensed Patents by Third Parties. In the event
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that DPC becomes aware of any infringement by Third Parties of any of
the Licensed Patents, subject to any confidentiality obligations DPC
may have, DPC shall promptly notify 3DP. 3DP shall respond to any such
infringement by Third Parties in a manner deemed appropriate by 3DP in
its sole judgment.
6.3 Third Party Patent Rights. If any warning letter or other notice of
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infringement is received by a Party, or action, suit or proceeding is
brought against a Party alleging infringement of a patent of any Third
Party with respect to operations under the Licensed Patents, the
Parties shall promptly discuss and decide the best way to respond.
Article 7 REPRESENTATIONS AND WARRANTIES
7.1 Authority. Each Party represents and warrants that it has the full
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right, power and authority to execute, deliver and perform its
obligations pursuant to this Agreement.
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7.2 No Conflicts. Each Party represents and warrants that the execution,
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delivery and performance of this Agreement does not conflict with, or
constitute a breach or default under any of its charter or
organizational documents, any law, order, judgment or governmental
rule or regulation applicable to it, or any material agreement,
contract, commitment or instrument to which it is a party.
7.3 No Existing Third Party Rights. The Parties represent and warrant that
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their obligations under this Agreement are not encumbered by any
rights granted by either Party to any Third Parties, which are or may
be inconsistent with the rights and licenses granted in this
Agreement.
7.4 No Unauthorized Operations Under Licensed Patents. DPC represents and
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warrants that it will not operate under the Licensed Patents at any
Site not identified to 3DP pursuant to Article 3 of this Agreement.
7.5 Continuing Representations. The representations and warranties of each
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Party contained in this Article 7 shall survive the execution and
delivery of this Agreement and shall remain true and correct at all
times during the term of this Agreement with the same effect as if
made on and as of such later date.
7.6 Disclaimer of Warranties. 3DP MAKES NO REPRESENTATIONS AND EXTENDS NO
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WARRANTIES OR CONDITIONS OF ANY KIND, EITHER EXPRESS OR IMPLIED, WITH
RESPECT TO THE LICENSED PATENTS INCLUDING, BUT NOT LIMITED TO,
WARRANTIES OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE.
7.7 3DP represents and warrants that Appendix A is accurate and complete
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and identifies all patent rights owned by 3DP as of the Effective Date
which are necessary for the use of the methods and technology claimed
in the Licensed Patents in accordance with the license granted
hereunder.
7.8 DPC represents and warrants that as of the Effective Date, DPC is not
operating under a valid, enforceable claim within the Licensed
Patents. DPC further represents and warrants that it will not operate
under a valid, enforceable claim within the Licensed Patents at any
Site unless and until DPC activates a Site License pursuant to Section
3.2 for that Site.
Article 8 TERM AND TERMINATION
8.1 Term. This Agreement shall commence upon the Effective Date and
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terminate on April 1, 2000 unless extended pursuant to the provisions
of Sections 2.3 and 3.2 of this Agreement.
8.2 Termination for Breach. The failure by a Party to comply with any of
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the material obligations contained in this Agreement shall entitle the
other
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Party to give notice to have the default cured. If such default is not
cured within sixty (60) days after the receipt of such notice, or
diligent steps are not taken to cure if by its nature such default
could not be cured within sixty (60) days, the notifying Party shall
be entitled, without prejudice to any of its other rights conferred on
it by this Agreement, and in addition to any other remedies that may
be available to it, to terminate this Agreement, provided, however,
that such right to terminate shall be stayed in the event that, during
such sixty (60) day period, the Party alleged to have been in default
shall have: (a) initiated arbitration in accordance with Section 9.1,
below, with respect to the alleged default, and (b) diligently and in
good faith cooperated in the prompt resolution of such arbitration
proceedings.
8.3 No Waiver. The right of a Party to terminate this Agreement, as
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provided in Section 8.2, shall not be affected in any way by its
waiver or failure to take action with respect to any prior default.
8.4 Insolvency or Bankruptcy.
(a) Either Party may, in addition to any other remedies available by
law or in equity, terminate this Agreement by written notice to
the other Party in the event the latter Party shall have become
insolvent or bankrupt, or shall have an assignment for the
benefit of its creditors, or there shall have been appointed a
trustee or receiver of the other Party or for all or a
substantial part of its property or any case or proceeding shall
have been commenced or other action taken by or against the other
Party in bankruptcy or seeking reorganization, liquidation,
dissolution, winding-up, arrangement or readjustment of its debts
or any other relief under any bankruptcy, insolvency,
reorganization or other similar act or law of any jurisdiction
now or hereafter in effect, or there shall have been issued a
warrant of attachment, execution, distraint or similar process
against any substantial part of the property of the other Party,
and any such event shall have continued for 90 days undismissed,
unbonded and undischarged.
(b) All rights and licenses granted under or pursuant to this
Agreement by DPC or 3DP are, and shall otherwise be deemed to be,
for purposes of Section 365(n) of the U.S. Bankruptcy Code,
licenses of right to "Intellectual property" as defined under
Section 101 of the U.S. Bankruptcy Code. The Parties agree that
the Parties as licensees of such rights under this Agreement,
shall retain and may fully exercise all of their rights and
elections under the U.S. Bankruptcy Code. The Parties further
agree that, in the event of the commencement of a bankruptcy
proceeding by or against either
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Parties under the U.S. Bankruptcy Code, the Parties hereto which
is not a party to such proceeding shall be entitled to a complete
duplicate of (or complete access to, as appropriate) any such
intellectual property and all embodiments of such intellectual
property, and same, if not already in their possession, shall be
promptly delivered to them (i) upon any such commencement of a
bankruptcy proceeding upon their written request therefor, unless
the Party subject to such proceedings elects to continue to
perform all of their obligations under this Agreement or (ii) if
not delivered under (i) above, upon the rejection of this
Agreement by or on behalf of the Party subject to such proceeding
upon written request therefor by a nonsubject Party.
8.5 Termination by DPC. Subject to Section 8.6, DPC shall have the right
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to terminate the license granted hereunder upon written notice to 3DP
or by failure to pay at least 1 annual Site License Fee in accordance
with Sections 2.3 and 3.2.
8.6 Survival of Obligations. The termination or expiration of this
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Agreement shall not relieve the Parties of any obligations accruing
prior to such termination, and any such termination shall be without
prejudice to the rights of either Party against the other. The
provisions of Sections 3.4 and 6.4 and Articles 4, 5, 9, 10 and 11
shall survive any termination of this Agreement.
Article 9 DISPUTE RESOLUTION
9.1 Dispute Resolution. Any dispute concerning or arising out of this
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Agreement or concerning the existence or validity hereof, shall be
determined by the following procedure.
(a) Both Parties understand and appreciate that their long term
mutual interest will be best served by affecting a rapid and fair
resolution of any claims or disputes which may arise out of
services performed under this contract or from any dispute
concerning the terms of this Agreement. Therefore, both Parties
agree to use their best efforts to resolve all such disputes as
rapidly as possible on a fair and equitable basis. Toward this
end, both Parties agree to develop and follow a process for
presenting, rapidly assessing, and settling claims on a fair and
equitable basis which takes into account the precise subject and
nature of the dispute.
(b) If any dispute or claim arising under this Agreement cannot be
readily resolved by the Parties pursuant to the process described
above, then the Parties agree to refer the matter to a panel
consisting of the Chief Executive Officer ("CEO") of each Party
or their designees for review and a non-binding resolution. A
copy of
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the terms of this Agreement, agreed upon facts (and areas of
disagreement), and concise summary of the basis for each side's
contentions will be provided to both such CEOs who shall review
the same, confer, and attempt to reach a mutual resolution of the
issue.
(c) If the matter has not been resolved utilizing the foregoing
process, and the Parties are unwilling to accept the non-binding
decision of the indicated panel, either or both Parties may elect
to pursue definitive resolution through binding arbitration,
which the Parties agree to accept in lieu of litigation or other
legally available remedies (with the exception of injunctive
relief where such relief is necessary to protect a Party from
irreparable harm pending the outcome of any such arbitration
proceeding). Binding arbitration shall be settled in accordance
with the Rules of Conciliation and Arbitration of the
International Chamber of Commerce by a panel of three arbitrators
chosen in accordance with these Rules. This Agreement shall be
governed by and construed in accordance with the substantive laws
of the State of Delaware without regard to the conflicts of laws
provisions of Delaware. The arbitration will be held in
Wilmington, Delaware. Judgment upon the award rendered may be
entered in any court having jurisdiction and the Parties hereby
consent to the said jurisdiction and venue, and further
irrevocably waive any objection which either Party may have now
or hereafter to the laying of venue of any proceedings in said
courts and to any claim that such proceedings have been brought
in an inconvenient forum, and further irrevocably agree that a
judgment or order in any such proceeding shall be conclusive and
binding upon the Parties and may be enforced in the courts of any
other jurisdiction.
Article 10 INDEMNIFICATION
(a) Indemnification of 3DP. DPC shall indemnify and defend 3DP and
its Affiliates and the directors, officers, employees, agents and
counsel of 3DP and such Affiliates and the successors and assigns
of any of the foregoing (the "3DP Indemnitees"), and hold the 3DP
Indemnitees harmless from and against any and all losses
resulting from any claim, suit or proceeding brought by a Third
Party against a 3DP Indemnitee, arising from or occurring as a
result of the operations by DPC under the Licensed Patents; or
the manufacture, import, use, offer for sale or sale of products
developed in whole or in part through the operations by DPC under
the Licensed Patents; except to the extent any such claim, suit
or proceeding results from the breach of any of the provisions of
this Agreement, negligence or willful misconduct of 3DP.
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10.2 Procedure. Any of the 3DP Indemnitees that intends to claim
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indemnification under this Article 10 shall promptly notify DPC
(the "Indemnitor") in writing of any loss in respect of which the
3DP Indemnitee intends to claim such indemnification, and the
Indemnitor shall have the right to participate in, and, to the
extent the Indemnitor so desires, to assume the defense thereof
with counsel mutually satisfactory to the Parties; provided,
however, that a 3DP Indemnitee shall have the right to retain its
own counsel, with the fees and expenses to be paid by the
Indemnitee, if representation of such Indemnitee by the counsel
retained by the Indemnitor would be inappropriate due to actual
or potential differing interests between such 3DP Indemnitee and
the Indemnitor in such proceeding. The Indemnitor shall control
the defense and/or settlement of any such loss, and the indemnity
agreement in this Article 10 shall not apply to amounts paid in
connection with any loss if such payments are made without the
consent of the Indemnitor, which consent shall not be withheld
unreasonably. The failure to deliver written notice to the
Indemnitor within a reasonable time after the commencement of any
such action, if prejudicial to its ability to defend such action,
shall relieve such Indemnitor of any liability to the 3DP
Indemnitee under this Article 10. At the Indemnitor's request,
the 3DP Indemnitee under this Article 10, and its employees and
agents, shall cooperate fully with the Indemnitor and its legal
representatives in the investigation of any loss covered by this
indemnification and provide true, correct and complete
information with respect thereto.
Article 11 MISCELLANEOUS
11.1 Entire Agreement. This Agreement and its Appendices constitute
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and contain the entire understanding and agreement of the Parties
respecting the subject matter of this Agreement and cancels and
supersedes any all prior negotiations, correspondence,
understandings and agreements between the Parties, whether oral
or written, regarding such subject matter.
11.2 Further Actions. Each Party agrees to execute, acknowledge and
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deliver such further instruments and to do all such other acts as
may be necessary or appropriate in order to carry out the
purposes and intent of this Agreement.
11.3 Binding Effect. This Agreement and the rights granted herein
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shall be binding upon and shall inure to the benefit of 3DP, DPC
and their successors and permitted assigns .
11.4 Assignment. This Agreement may be assigned by either Party in
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connection with the sale or transfer of substantially all of its
assets that relate to this Agreement, or in the event of its
merger or consolidation or
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change of control or similar transaction. Any permitted assignee
shall assume all obligations of its assignor under this
Agreement.
11.5 No Implied Licenses. No rights to any other patents, know-how or
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technical information, or other intellectual property rights,
other than as explicitly identified herein, are granted or deemed
granted by this Agreement. No right, expressed or implied, is
granted by this Agreement to a Party to use in any manner the
name or any other trade name or trademark of the other Party in
connection with the performance of this Agreement.
11.6 No Waiver. No waiver, modification or amendment of any provision
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of this Agreement shall be valid or effective unless made in
writing and signed by a duly authorized officer of each Party. No
waiver, modification or amendment of any provision of this
Agreement shall be valid or effective unless made in writing and
signed by a duly authorized officer of each Party. The failure of
either Party to assert a right hereunder or to insist upon
compliance with any term or condition of this Agreement shall not
constitute a waiver of that right or excuse a similar subsequent
failure to perform any such term or condition.
11.7 Force Majeure. The failure of a Party to perform any obligation
-------------
under this Agreement by reason of acts of God, acts of
governments, riots, wars, strikes, accidents or deficiencies in
materials or transportation or other causes of a similar
magnitude beyond its control shall not be deemed to be a breach
of this Agreement.
11.8 Independent Contractors. Both Parties are independent
-----------------------
contractors under this Agreement. Nothing contained in this
Agreement is intended nor is to be construed so as to constitute
3DP or DPC as partners or joint venturers with respect to this
Agreement. Neither Party shall have any express or implied right
or authority to assume or create any obligations on behalf of or
in the name of the other Party or to bind the other Party to any
other contract, agreement, or undertaking with any Third Party.
11.9 Notices and Deliveries. Any formal notices, request, delivery,
----------------------
approval or consent required or permitted to be given under this
Agreement shall be in writing and shall be deemed to have been
sufficiently given when it is received, whether delivered in
person, transmitted by facsimile with contemporaneous
confirmation, or delivery by registered letter (or its
equivalent) or delivery by certified overnight courier service,
to the Party to which it is directed at its address shown below
or such other address as such Party shall have last given by
notice to the other Parties.
14
<PAGE>
If to DPC:
Vice President, Product Planning and Acquisitions
DuPont Pharmaceuticals Company
974 Centre Road, Chestnut Run Plaza
Wilmington, DE 19805
Fax: 302-992-3040
with a copy to:
Associate General Counsel
Legal Division
DuPont Pharmaceuticals Company
974 Centre Road, Chestnut Run Plaza, WR1028
Wilmington, DE 19805
Fax: 302-992-3999
If to 3DP:
3-Dimensional Pharmaceuticals, Inc.
Eagleview Corporate Center
665 Stockton Drive, Suite 104
Exton, PA 10341
ATTN: Chief Executive Officer
with a copy to:
Morgan, Lewis & Bockius LLP
1701 Market Street
Philadelphia, PA 19103
ATTN: David R. King, Esq.
11.10 Public Announcements. The Parties shall consult with each other
--------------------
and reach mutual written agreement before making any public
announcement concerning this Agreement or its subject matter. A
joint press release to announce the signing of this Agreement is
attached as Appendix B to this Agreement, and the Parties agrees
----------
to coordinate the dissemination of this press release.
Notwithstanding the foregoing, the Parties may disclose the
existence and general nature of this Agreement and may make
disclosures for purposes of satisfying legal and regulatory
requirements in accordance with Article 5; however, neither Party
shall use the name of the other Party for promotional purposes.
15
<PAGE>
11.11 Headings. The captions to the sections and articles in this
--------
Agreement are not a part of this Agreement, and are included
merely for convenience of reference only and shall not affect its
meaning or interpretation.
11.12 Severability. If any provision of this Agreement becomes or is
------------
declared by a court of competent jurisdiction to be illegal,
unenforceable or void, this Agreement shall continue in full
force and effect without said provision, so long as the
Agreement, taking into account said voided provision(s),
continues to provide the Parties with the same practical economic
benefits as the Agreement containing said voided provision(s) did
on the date of this Agreement. If, after taking into account said
voided provision(s), the Parties are unable to realize the
practical economic benefit contemplated on the date of this
Agreement, the Parties shall negotiate in good faith to amend
this Agreement to reestablish the practical economic benefit
provided the Parties on the date of this Agreement.
11.13 No Consequential Damages. IN NO EVENT SHALL EITHER PARTY OR ANY
------------------------
OF ITS RESPECTIVE AFFILIATES BE LIABLE TO THE OTHER PARTY OR ANY
OF ITS AFFILIATES FOR SPECIAL, INDIRECT, INCIDENTAL OR
CONSEQUENTIAL DAMAGES, WHETHER IN CONTRACT, WARRANTY, TORT,
NEGLIGENCE, STRICT LIABILITY OR OTHER WISE, INCLUDING, BUT NOT
LIMITED TO, LOSS OF PROFITS OR REVENUE, OR CLAIMS OF CUSTOMERS OF
ANY OF THEM OR OTHER THIRD PARTIES FOR SUCH OR OTHER DAMAGES.
11.14 Applicable Law. This Agreement shall be governed by and
--------------
interpreted in accordance with the laws of the State of Delaware
without reference to its conflicts of laws provisions.
11.15 Advice of Counsel. DPC and 3DP have each consulted with counsel
-----------------
of their choice regarding this Agreement, and each acknowledges
and agrees that this Agreement shall not be deemed to have been
drafted by one party or another and will be construed
accordingly.
11.16 Counterparts. This Agreement may be executed in counterparts, or
------------
facsimile versions, each of which shall be deemed to be an
original, and both of which together shall be deemed to be one
and the same agreement.
16
<PAGE>
In WITNESS WHEREOF, the Parties have caused this Agreement to be executed by
their respective duly authorized officers as of the day and year first above
written, each copy of which shall for all purposes be deemed to be an original.
3 DIMENSTIONAL DUPONT PHARMACEUTIALS
PHARMACEUTICALS, INC. COMPANY
By: /s/ David C. U'Prichard By: /s/ Paul A. Friedman
---------------------------- ------------------------
Name: David C. U'Prichard, Ph.D. Name: Paul A. Friedman, M.D.
Title: Chief Executive Officer Title: President, DuPont Pharmaceuticals
Research Laboratories
17
<PAGE>
Appendix A: Licensed Patent Rights
<TABLE>
<CAPTION>
-------------------------------------------------------------------------------------------------------------------------
3DP Application Number Filing Date Title
--- ----------------- ----------- -----
Reference or Patent Number or Issue Date
--------- ---------------- -------------
-------------------------------------------------------------------------------------------------------------------------
<S> <C> <C> <C>
1503.0010000 Patent No. 5,463,564 Issued October 31, 1995 System and Method of Automatically Generating
Chemical Compounds with Desired Properties
-------------------------------------------------------------------------------------------------------------------------
1503.0010001 Patent No. 5,574,656 Issued November 12, 1996 System and Method of Automatically Generating
Chemical Compounds with Desired Properties
-------------------------------------------------------------------------------------------------------------------------
1503.0010002 Patent No. 5,684,711 Issued November 4, 1997 System, Method, and Computer Program Product
for at Least Partially Automatically Generating
Chemical Compounds Having Desired Properties
-------------------------------------------------------------------------------------------------------------------------
1503.0010003 Patent No. 5,901,069 Issued May 4, 1999 System, Method, and Computer Program Product
for at LEAST PARTIALLY AUTOMATICALLY GENERATING
Chemical Compounds Having Desired Properties From
a List of Potential Chemical Compounds to
Synthesize
-------------------------------------------------------------------------------------------------------------------------
1503.0010004 Appl. No. 09/213,156 Filed December 17, 1998 Method of Generating Chemical Compounds
Having Desired Properties
-------------------------------------------------------------------------------------------------------------------------
1503.001AU00 Patent No. 688598 Issued September 17, 1998 System and Method of Automatically Generating
Chemical Compounds with Desired Properties
-------------------------------------------------------------------------------------------------------------------------
1503001AU10 Appl. No. 71886/98 Filed June 12, 1998 System and Method of Automatically Generating
Chemical Compounds with Desired Properties
-------------------------------------------------------------------------------------------------------------------------
1503.001CA00 Appl. No. 2,199,264 Filed September 11, 1995 System and Method of Automatically Generating
Chemical Compounds with Desired Properties
-------------------------------------------------------------------------------------------------------------------------
1503.001EP00 Appl. No. 95933748.6 Filed September 11, 1995 System and Method of Automatically Generating
Chemical Compounds with Desired Properties
-------------------------------------------------------------------------------------------------------------------------
1503.001HU00 Appl. No. P9801578 Filed September 11, 1995 System and Method of Automatically Generating
Chemical Compounds with Desired Properties
-------------------------------------------------------------------------------------------------------------------------
1503.001IL00 Patent No. 115292 Issued October 28, 1999 System and Method of Automatically Generating
Chemical Compounds with Desired Properties
-------------------------------------------------------------------------------------------------------------------------
1503.001IL10 Patent No. 125017 Issued October 28, 1999 Computer Based System and Method of
Automatically Generating Chemical Compounds
-------------------------------------------------------------------------------------------------------------------------
1503.001IN00 Appl. No. 1068CAL95 Filed September 7, 1995 System and Method of Automatically Generating
Chemical Compounds with Desired Properties
-------------------------------------------------------------------------------------------------------------------------
1503.001JP00 Appl. No. 510247/1996 Filed September 11, 1995 System and Method of Automatically Generating
Chemical Compounds with Desired Properties
-------------------------------------------------------------------------------------------------------------------------
1503.001PC00 Appl. No. Filed September 11, 1995 System and Method of Automatically Generating
PCT/US95/11365 Chemical Compounds with Desired Properties
-------------------------------------------------------------------------------------------------------------------------
1503.001TW00 Appl. No. 84109873 Filed September 26, 1995 System and Method of Automatically Generating
Chemical Compounds with Desired Properties
-------------------------------------------------------------------------------------------------------------------------
</TABLE>
18
<PAGE>
<TABLE>
<CAPTION>
-------------------------------------------------------------------------------------------------------------------------------
3DP Application Number Filing Date Title
--- ------------------ ----------- -----
Reference Or Patent Number or Issue Date
--------- ---------------- -------------
-------------------------------------------------------------------------------------------------------------------------------
<S> <C> <C> <C>
1503.0200001 Appl. No. 08/963,870 Filed November 4, 1997 System, and Method, and Computer Program Product
for Identifying Chemical Compounds Having Desired
Properties
-------------------------------------------------------------------------------------------------------------------------------
1503.0200002 Appl. No. 08/963,872 Filed November 4, 1997 System, Method, and Computer Program Product for the
Visualization and Interactive Processing and
Analysis of Chemical Data
-------------------------------------------------------------------------------------------------------------------------------
1503.0200003 Appl. No. 09/073,845 Filed May 7, 1998 System, Method, and Computer Program Product for
Representing Proximity Data in a Multi-Dimensional
Space
-------------------------------------------------------------------------------------------------------------------------------
[**]
-------------------------------------------------------------------------------------------------------------------------------
1503.020AU01 Appl. No. 54407/98 Filed November 4, 1997 System, Method, and Computer Program Product for
Identifying Chemical Compounds Having Desired
Properties
-------------------------------------------------------------------------------------------------------------------------------
1503.020AU02 Appl. No. 51800/98 Filed November 4, 1997 System, Method, and Computer Program Product for the
Visualization and Interactive Processing and
Analysis of Chemical Data
-------------------------------------------------------------------------------------------------------------------------------
1503.020CA01 Appl. No. 2,269,669 Filed November 4, 1997 System, Method, and Computer Program Product for
Identifying Chemical Compounds Having Desired
Properties
-------------------------------------------------------------------------------------------------------------------------------
1503.020CA02 Appl. No. 2,270,527 Filed November 4, 1997 System, Method, and Computer Program Product for the
Visualization and Interactive Processing and
Analysis of Chemical Data
-------------------------------------------------------------------------------------------------------------------------------
1503.020EP01 Appl. No. 97948320.3 Filed November 4, 1997 System, Method, and Computer Program Product for
Identifying Chemical Compounds Having Desired
Properties
-------------------------------------------------------------------------------------------------------------------------------
1503.020EP02 Appl. No. 97946679.4 Filed November 4, 1997 System, Method, and Computer Program Product for the
Visualization and Interactive Processing and
Analysis of Chemical Data
-------------------------------------------------------------------------------------------------------------------------------
1503.020IL01 Appl. No. 129498 Filed November 4, 1997 System, Method, and Computer Program Product for
Identifying Chemical Compounds Having Desired
Properties
-------------------------------------------------------------------------------------------------------------------------------
1503.020IL02 Appl. No. 129728 Filed May 4, 1997 System, Method, and Computer Program Product for the
Visualization and Interactive Processing and
Analysis of Chemical Data
-------------------------------------------------------------------------------------------------------------------------------
1503.020JP01 Appl. No. 521902/1998 Filed November 4, 1997 System, Method, and Computer Program Product for
Identifying Chemical Compounds Having Desired
Properties
-------------------------------------------------------------------------------------------------------------------------------
1503.020JP02 Appl. No. 521903/1998 Filed November 4, 1997 System, Method, and Computer Program Product for the
Visualization and Interactive Processing and
Analysis of Chemical Data
-------------------------------------------------------------------------------------------------------------------------------
1503.020PC01 Appl. No. Filed November 4, 1997 System, Method, and Computer Program Product for the
PCT/US97/20918 Visualization and Interactive Processing and
Analysis of Chemical Data
-------------------------------------------------------------------------------------------------------------------------------
1503.020PC02 Appl. No. Filed November 4, 1997 System, Method, and Computer Program Product for
PCT/US97/20919 Identifying Chemical Compounds Having Desired
Properties.
-------------------------------------------------------------------------------------------------------------------------------
[**]
-------------------------------------------------------------------------------------------------------------------------------
</TABLE>
** Certain portions of this Exhibit have been omitted based upon a request
for confidential treatment that has been filed with the Commission. The
omitted portions have been filed separately with the Commission.
19
<PAGE>
Appendix B: Joint Press Release
FOR IMMEDIATE RELEASE
For 3DP, Contact: For DuPont Contact:
-------------------------------------------------------------------------------
Business
Michael J. Wassil Thomas R. Barry
Chief Financial Officer 302-992-5020
(610) 458-6073
Media
Jerry Parrot
Jerry Parrot & Associates
703-757-0950
DuPont and 3-Dimensional Pharmaceuticals
Announce Drug Discovery Collaboration
- DuPont also Licenses 3DP's DirectedDiversity(R) Drug Discovery Patents-
Exton, PA and Wilmington, DE - February XX, 2000 - DuPont Pharmaceuticals
Company, a wholly-owned independent subsidiary of DuPont (NYSE: DD), and 3-
Dimensional Pharmaceuticals, Inc. (3DP) today announced a strategic
collaboration in which 3DP will use its proprietary DirectedDiversity technology
to assist DuPont Pharmaceuticals in the discovery of innovative new drugs for
specific biological targets.
3DP will apply its iterative drug discovery process to generate custom
combinatorial chemistry libraries based on molecules and information provided by
DuPont Pharmaceuticals and will optimize those molecules into preclinical drug
candidates. DuPont Pharmaceuticals will be responsible for preclinical and
clinical development, marketing and sales of the resulting products.
20
<PAGE>
For the initial target, 3DP will receive payments of up to $9 million, including
an up-front technology access fee, research and development funding and
milestone payments. 3DP will also receive royalties on sales of resulting
products and will be eligible to receive additional payments if more than one
target is selected to be included in the collaboration.
The parties also announced an additional agreement in which DuPont
Pharmaceuticals will obtain a non-exclusive license to 3DP's proprietary
DirectedDiversity(R) drug discovery patents. Under the license agreement,
DuPont Pharmaceuticals will receive a non-exclusive license to 3DP's
DirectedDiversity(R) patents in support of DuPont Pharmaceuticals internal
research Programs, and will pay an annual Site License fee for each DuPont
Pharmaceuticals facility using the technology.
DuPont Pharmaceuticals is committed to aggressive exploration and use of
leading-edge discovery technologies to speed the process of research and
development and to improve the quality of new drugs entering clinical trials,"
said Paul Friedman, M.D., President of DuPont Pharmaceuticals Research
Laboratories.
David C. U'Prichard, Ph.D., Chief Executive Officer of 3-Dimensional
Pharmaceuticals, noted that 3DP's technology platform allows the company to
discover and refine drugs against a wide range of molecular targets more quickly
than conventional approaches. "DuPont is one of the great pioneering research-
based companies, and we are particularly pleased with this important recognition
of 3DP's proprietary DirectedDiversity(R) drug discovery process. Our
scientists look forward with great anticipation to working with their colleagues
at DuPont Pharmaceuticals," he said. "We are confident that the collaboration
we are announcing today will prove productive for both parties".
21
<PAGE>
DirectedDiversity(R) Chemi-Informatic Technology uses proprietary computer
algorithms to design, select and iteratively refine combinatorial libraries of
novel, small-molecule drugs based on screening "hits" obtained from 3DP or other
screening libraries, target-protein 3D structures, or pharmacophore models
derived from lead compounds.
To prime the discovery process, 3DP has synthesized DirectedDiversity(R)
Screening Libraries totaling more than 200,000 individually synthesized drug-
like compounds. These compounds represent proven pharmacophore classes and
constitute an optimally diverse sampling of the DirectedDiversity(R) Accessible
Compound Libraries, which now total more than 1.5 billion compounds, each of
which is available for on-demand synthesis using parallel synthesis technology.
DirectedDiversity(R) is a major component of 3DP's DiscoverWorks, which
provides a uniquely integrated platform for the high-throughput synthesis,
screening, and optimization of chemical compounds. DiscoverWorks can be
applied flexibly to a wide range of molecular targets identified through genome
sequencing efforts - even in situations where the target's biological function
is ambiguous or unknown. DiscoverWorks enhances the efficiency of conventional
drug discovery, making the process more rapid and reliable.
Earlier this year, 3DP received the fourth in a series of patents covering its
DirectedDiversity(R) process. DirectedDiversity(R) controls and manages the
overall information flow for combinatorial drug discovery and provides the
computational tools needed to optimize drug properties rapidly using parallel
automated chemical synthesis. 3DP has a flexible licensing program available to
those companies interested in obtaining licenses to its DirectedDiversity(R)
patent portfolio.
22
<PAGE>
Based in Wilmington, Delaware, DuPont Pharmaceuticals is a worldwide business
that focuses on research, development and delivery of pharmaceuticals to treat
unmet medical needs in the fight against HIV, cardiovascular disease, central
nervous system disorders, cancer and inflammatory diseases. The company also is
a leader in medical imaging.
DuPont is a science company, delivering science-based solutions that make a
difference in people's lives in food and nutrition, health care, apparel, home
and construction, electronics, and transportation. Founded in 1802, the company
operates in 65 countries and has 97,000 employees.
3-Dimensional Pharmaceuticals, Inc. (http://www.3dp.com) is a leading innovator
in drug discovery. The company has developed a proprietary technology platform
known as DiscoverWorks, which uniquely integrates structure-based drug design,
combinatorial chemistry and high-throughput screening. DiscoverWorks reduces
discovery costs, increases the rate of success and enhances the ultimate
commercial value of a drug development pipeline. 3DP is using its proprietary
technology both in collaboration with other companies and in its own research
programs, which currently target orally active small-molecule pharmaceuticals to
treat cardiovascular disease and cancer.
23
